Dudas

Subscribe to Dudas via RSS

Please join me this Friday, March 6 for the Northwestern Journal of Technology & Intellectual Property’s annual symposium. I will be moderating a debate over whether business methods should be patentable in light of the recent Bilski decision. McDonnell Boehnen’s Bob Irvine will argue for business methods and Knobbe Martens’ Lauren Katzenellenbogen will argue against. If that debate is not enough to get you to the Symposium, here is a sampling of the other excellent presentations:
The Northern District’s Chief Judge Holderman will give the not to be missed keynote presentation: “Ten Commandments for Conducting an Intellectual Property Jury Trial.”
Panel on Tafas v. Dudas, Patent Rules Changes, and Patent Reform – a panel discussion on the Tafas case and patent reform bills recently considered by Congress featuring Chris Singer of McDonnell Boehnen Hulbert & Berghoff, and Patent Docs author, will discuss the Tafas v. Dudas decision and the effects the proposed changes would have had on patent practice, and Prof. Sean Seymore of the Washington and Lee University School of Law, and Prof. Matthew Sag of DePaul University College of Law, who will add a viewpoint from outside the practicing legal community.
Discussion of Employer Invention Assignment Agreements after DDB Technologies L.L.C. v. MLB Advanced Media, L.P. – a panel discussion regarding the best ways for protecting a client’s interests (whether the individual or the company) in an invention assignment agreement following DDB Technologies, featuring Mike Baniak of McDonnell Boehnen Hulbert & Berghoff, and Todd Dawson, Vice President of Legal Affairs at Zimmer, Inc.
More information is available at the Symposium’s website. Registration is free, although CLE credit costs $50 per credit hour. To register contact the development editor, Michael Hammer, m-hammer2009@nlaw.northwestern.edu.
…
Continue Reading Northwestern Journal of Technology & IP Symposium

Here are several blog posts that are worth your time on this Monday morning:
* At Deliberations, Anne Reed warns of six mistakes that can derail voir dire — click here to read the post. Anyone who follows Deliberations knows that when Reed discusses voir dire, everyone should listen.
* The Federal Circuit heard oral argument in Tafas v. Dudas last week. Here is some of the commentary: Patent Baristas; Patently-O; PLI Blog;
* At IP ADR Blog, Victoria Pynchon offers to arbitrate your patent case and says under expedited AAA commercial rules you can get a decision within 45 days of selecting the arbitrator — click here to read the post. Amazing, I may try that in the dispute resolution clause of my next license agreement.
* Anyone who read his 2007 NYC Marathon Blawg Review will not be surprised that Eric Turkewitz’s post-Thanksgiving Blawg Review last week at his New York Personal Injury Law Blog was one of the best of the year — click here to read it.
…
Continue Reading IP Legal News

Yesterday I blogged briefly about the Eastern District of Virginia’s injunction preventing the PTO’s new continuation rules from taking effect today, November 1st. But the Court’s order was not available yet. The order has been issued — click here for a copy — and it is very interesting. The Court held that plaintiff GSK had shown a likelihood of success on the merits regarding several issues:
That limiting the number of continuations a party can file violates 35 U.S.C. Section 120, which states that later filed applications have the same effect as their parent applications.
That the new rules are impermissably retroactive because the limits on numbers of claims and continuations will change the terms of the bargain struck between inventors currently prosecuting their applications and the PTO when those inventors filed their applications, prior to the new rules going into effect.
That the requirements for Examination Support Documents (“ESD”) are impermissably vague because they do not sufficiently define the paramters of the search required.
The Court also held that GSK would be irreparably harmed by implementation of the rules because GSK has about 2,000 pending applications and GSK’s rights in each of those applications would be materially altered by the new rules.
The balance of hardships weighed in GSK’s favor. The PTO’s losses were sunk costs — updating computer systems and training staff. But if the PTO wins the suit and later implements the continuation rules, the new computer systems and the employee training will still be valuable. On the other hand, the entry of the continuations rules will materially limit GSK’s rights in its 2,000 pending patent applications.
Finally, the public interest is in maintaining the status quo, rather than allowing the implementation of a new set of rules which could be reversed by the Court in a matter of months.
For more on the preliminary injunction and thoughts about whether the PTO will file an emergency appeal with the Federal Circuit, check out:
Patently-O
FileWrapper
271 Patent Blog
WSJ Law Blog
Patent Practice Center Patent Blog
I will continue to update this post with coverage of the injunction and any appeals throughout the day.
…
Continue Reading Continuation Rules Would Cause GSK Irreparable Harm

This morning, the Eastern District of Virginia held a hearing on SmithKline’s motion for a preliminary injunction against the PTO to prevent the new continuation rules from becoming effective tomorrow, November 1st — click here for the Blog’s coverage of the case this morning. Gene Quinn and John White of the PLI Patent Practice Center Blog, who attended the hearing, are reporting that the Court preliminarily enjoined the PTO from making the new continuation rules effective. Of course, the injunction is only preliminary so there is no way to tell what the ultimate result will be. But everyone that was busy trying to file one last continuation today and worried about whether the PTO’s e-filing system would crash under the weight of all of the last minute filings, can put down their pens and rest easy. The deadline may still come, but it is no longer today.
…
Continue Reading PTO Preliminarily Enjoined From Using New Continuation Rules

Usually I post a holiday-related patent on major holidays (which Halloween is in my house). But in light of today’s Eastern District of Virginia preliminary injunction hearing regarding whether to allow the PTO’s new continuation rules to take effect tomorrow, November 1, as planned, I thought a post on the continuation rules was more appropriate. The patent world, and more particularly the patent prosecution world, has been busy analyzing and preparing for the new continuation rules for several months. For analysis of the new rules check out the Maryland Intellectual Property Law Blog (click here and here) and the 271 Patent Blog (click here).
While most were just probing the rules for loopholes or preparing to comply with them, two also filed suits in the Eastern District of Virginia seeking to enjoin enactment of the new rules — Triantafyllos Tafas v. Dudas, No. 07 C 846 (E.D. Va.) and SmithKline Beecham Corp./GSK v. Dudas, No 07 C 1008. Click here for Patent Docs’ excellent coverage of the SmithKline/GSK suit.
The two suits were consolidated and a preliminary injunction hearing has been set for today — click here and here to download the briefs at Patently-O. Numerous entities have taken sides, filing amicus briefs — click here for a list of the briefs and links to some of them at the PLI Patent Practice Center Blog. And for those of you who cannot wait to read the result here shortly after it comes out and who are not busy with legal work or preparing for tonight’s trick or treating, click here for the PLI Patent Practice Center Blog’s live blogging coverage of the PI hearing.
Happy Halloween.
…
Continue Reading Trick or Treat: Have a Preliminary Injunction to Eat